Appendix I: Prior Art Rejections
This section also includes details on the America Invents Act (AIA) changes to 35 U.S.C. 102 and 35 U.S.C. 103. More details will be covered in each specific appendix. This appendix gives a good overview of the new statutes.
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The Executive Summaries from the main chapter sections have been copied here for your convenience (subsections are not included here). They will help you remember what each main section of the Guidebook (MPEP) covers as you answer the questions from the quizzes above.
This section provides a brief overview of rejections based on prior art. For instance, prior art rejections should ordinarily be confined strictly to the best available art. It covers how to handle reliance on abstracts and foreign language documents in support of a rejection. Essentially, when an abstract is used to support a rejection, the evidence relied upon is the facts contained in the abstract, not additional facts that may be contained in the underlying full text document. In addition, this section covers reliance on admitted prior art in support of a rejection.
This section also briefly covers the distinction between 35 U.S.C. 102 and 103. Essentially, the distinction between rejections based on 35 U.S.C. 102 include those where the claim is anticipated by the reference. No question of obviousness is present. In a rejection based on 35 U.S.C. 103, the reference teachings must somehow be modified in order to meet the claims. Lastly, this section includes a discussion on determining the effective filing date of a claimed invention.
This section covers the general level of operability required to make a prima facie case. It covers the idea that prior art is presumed to be operable/enabling and that what constitutes an enabling disclosure does not depend on the type of prior art the disclosure is contained in. Essentially, the level of disclosure required within a reference to make it an “enabling disclosure” is the same no matter what type of prior art is at issue. The last point made by this section is that efficacy is not a requirement for prior art enablement.
In order to constitute anticipatory prior art, a reference must identically disclose the claimed compound, but no utility need be disclosed by the reference.
This section covers a rejection over a prior art's broad disclosure instead of preferred embodiments. Patents are relevant as prior art for all they contain. Nonpreferred and alternative embodiments constitute prior art.
In certain circumstances, references cited to show a universal fact need not be available as prior art before applicant’s filing date.
This section explains that drawings can be used as prior art. To be used as prior art, the origin of the drawing is immaterial as long as the drawing or picture shows the structure which is claimed.
This section covers examination guidelines for 35 U.S.C. 102 and 103 as amended by the first inventor to file provisions of the AIA. Essentially, the changes to 35 U.S.C. 102 and 103 in the AIA do not apply to any application filed before March 16, 2013. Submission of an amendment including a claim that includes new matter on or after March 16, 2013, also does not affect an application’s status as a pre-AIA application.
This section provides an overview of the changes to 35 U.S.C. 102 and 103 in the AIA. AIA 35 U.S.C. 102(a)(1) and (a)(2) set forth what qualifies as prior art. AIA 35 U.S.C. 102(b) sets forth exceptions to prior art established in AIA 35 U.S.C. 102(a). AIA 35 U.S.C. 102(c) provides for common ownership of subject matter made pursuant to joint research agreements.
This section also provides a few comparisons and differences between AIA 35 U.S.C. 102 and pre-AIA 35 U.S.C. 102. One of the main differences is that the date of invention is not relevant under AIA 35 U.S.C. 102.
AIA 35 U.S.C. 103 provides that a patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in 35 U.S.C. 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.
AIA 35 U.S.C. 102 and 103 took effect on March 16, 2013.
Because the changes to 35 U.S.C. 102 and 35 U.S.C. 103 in the AIA apply only to specific applications filed on or after March 16, 2013, determining the effective filing date of a claimed invention for purposes of applying AIA 35 U.S.C. 102 and 103 provisions or pre-AIA 35 U.S.C. 102 and 103 provisions is critical.
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